Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AGILTRON, INC.
`Petitioner
`
`v.
`
`MEMSCAP S.A.
`Patent Owner
`
`Patent No. 6,262,512
`Issued: July 17, 2001
`Filed: November 8, 1999
`Title: THERMALLY ACTUATED MICROELECTROMECHANICAL
`SYSTEMS INCLUDING THERMAL ISOLATION STRUCTURES
`_______________
`
`Inter Partes Review No. IPR2016-01683
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 USC §§ 311-319 AND 37 CFR § 42.100 ET. SEQ.
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`IPR2016-01683 re: Patent No. 6,262,512
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES AND CERTIFICATIONS .................................. 1
`
`A. Notice of Lead and BackUp Counsel ................................................. 1
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`B. Notice of Each Real Party-In-Interest ................................................ 2
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`C. Notice of Related Matters ................................................................... 2
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`D. Fee ....................................................................................................... 2
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`E. Notice of Service Information ............................................................ 3
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`F. Grounds for Standing .......................................................................... 3
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 4
`IV. THE ‘512 PATENT ......................................................................................... 6
`V.
`STATE OF SKILL IN THE ART ................................................................... 8
`
`A. The Person of Ordinary Skill in the Art ............................................. 8
`
`B. Background Knowledge of the Ordinarily Skilled Artisan ................ 9
`
`C. Motivation to Combine Thermal Actuators with Thermal
`Isolation Structures ........................................................................... 11
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`VI. CONSTRUCTION OF THE CLAIMS ......................................................... 12
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`A. Construction of “Thermal Isolation Structure” ................................ 12
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`B. Construction of “Support” ................................................................ 13
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`VII. STATEMENT OF PRECISE RELIEF REQUESTED AND
`CLAIM-BY-CLAIM EXPLANATION OF GROUNDS OF
`INVALIDITY ................................................................................................ 13
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`A. Ground 1: Claims 4 and 14 Are Anticipated by Beatty ................... 14
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`B. Ground 2: Claims 1, 4, 10, and 14 Are Obvious over
`Beatty in View of Tsai ...................................................................... 23
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`C. Ground 3: Claims 1, 4, 10, and 14 Are Obvious Over
`Beatty in View of Jang ..................................................................... 34
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`D. Ground 4: Claims 4 and 14 Are Anticipated by Klaassen .............. 45
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`E. Ground 5: Claims 4 and 14 are Obvious Over Klaassen
`in View of Bajor ............................................................................... 49
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`F. Ground 6: Claims 1, 4, 10, and 14 Are Obvious Over
`Klaassen in View of Tsai .................................................................. 56
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`G. Ground 7: Claims 1, 4, 10, and 14 Are Obvious over
`Klaassen in View of Jang ................................................................. 62
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`H. Ground 8: Claims 4 and 14 Are Obvious over
`Wiszneiwski in View of Lisec ........................................................... 69
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`VIII. CONCLUSION .............................................................................................. 78
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`EXHIBIT LIST
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`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
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`1013
`
`1014
`
`1015
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`1016
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`US Patent No. 6,262,512 (“‘512 Pat.”)
`
`File History of US Patent No. 6,262,512
`
`US Patent No. 5,050,838 Beatty et al. (“Beatty”)
`
`Erno H. Klassen et al, “Silicon Fusion Bonding and Deep
`Reactive Ion Etching; A New Technology for Microstructures”
`(“Klaassen”)
`
`US Patent No. 6,070,851 Tsai et al. (“Tsai”)
`
`US Patent No. 5,741,740 Jang et al. (“Jang”)
`
`US Patent No. 5,682,053 Wiszniewski (“Wiszneiwski”)
`
`T. Lisec et al, “Thermally Driven Microvalve with Buckling
`Behaviour for Pneumatic Applications” (“Lisec”)
`
`J. Mark Noworolski et al, “Fabrication of SOI Wafers With
`Buried Cavities Using Silicon Fusion Bonding and
`Electrochemical Etchback” (“Noworoloski”)
`
`Semiannual Progress Report for the Reporting Period January
`1995 to July 1995 On “Single Crystal Silicon Actuators and
`Sensors Based On Silicon Fusion Bonding Technology”
`(“Maluf Report”)
`
`US Patent No. 5,534,111 Hocker et al. (“Hocker”)
`
`US Patent No. 4,771,016 Bajor et al. (“Bajor”)
`
`US Patent No. 5,783,854 Dries et al. (“Dries”)
`
`Excerpts from N. Maluf, “An Introduction to
`Microelectromechanical Systems Engineering” (“Maluf Text”)
`
`1017
`
`US Patent No. 5,909,078 Wood et al. (“Wood”)
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`1018
`
`1019
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`M. Asheghi et al, “Temperature-Dependent Thermal
`Conductivity of Single-Crystal Silicon Layers in SOI
`Substrates” (“Ashegi”).
`
`O. Paul et al, “Thermal Conductivity of CMOS Materials for
`the Optimization of Microsensors” (“Paul”)
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`I.
`
`INTRODUCTION
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`Agiltron, Inc. (“Petitioner”) respectfully requests inter partes review of
`
`claims 1, 4, 10 and 14 of U.S. Patent No. 6,262,512 (the “‘512 patent”), Ex. 1001,
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`which is owned by MEMSCAP, S.A.
`
`II. MANDATORY NOTICES AND CERTIFICATIONS
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`A. Notice of Lead and BackUp Counsel
`
`Backup Counsel
`Keith Toms
`(Pro Hac Vice Pending)
`ktoms@mccarter.com
`McCarter & English, LLP
`265 Franklin St.
`Boston, MA 02110
`T: 617-449-6591
`F: 617-780-9226
`
`Anita M. Bowles
`Reg. No. 61,189
`abowles@mccarter.com
`McCarter & English, LLP
`265 Franklin St.
`Boston, MA 02110
`T: 617-449-6528
`
`Deborah M. Vernon
`Reg. No. 55,699
`dvernon@mccarter.com
`McCarter & English, LLP
`265 Franklin St.
`Boston, MA 02110
`T: 617-449-6548
`
`
`
`Lead Counsel
`Thomas O. Hoover
`Reg. No. 32,470
`thoover@mccarter.com
`McCarter & English, LLP
`265 Franklin St.
`Boston, MA 02110
`T: 617-449-6572
`F: 617-963-0494
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`Kia L. Freeman
`Reg. No. 47,577
`kfreeman@mccarter.com
`McCarter & English, LLP
`265 Franklin St.
`Boston, MA 02110
`T: 617-449-6549
`
`A power of attorney is being filed with the designation of counsel in
`
`
`
`accordance with 37 C.F.R. § 42.10(b).
`
`B. Notice of Each Real Party-In-Interest
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`
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`The real-party-in-interest for this Petition is Agiltron, Inc. (“Petitioner”); 15
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`Presidential Way, Woburn, Massachusetts 01801.
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`C. Notice of Related Matters
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`
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`The ‘512 patent is asserted in Memscap, S.A. v. Agiltron, Inc., C.A. No. 15-
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`796-RGA (D. Del.), in which the Patent Owner contends that the Petitioner
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`infringes the ‘512 patent in a complaint served on Petitioner on January 7, 2016.
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`D.
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`Fee
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`This Petition requests review of 4 claims of the ‘512 patent, therefore no
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`excess claim fees are required. A payment of $23,000 is submitted herewith, which
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`comprises a $9,000 request fee (for up to 20 claims) and a post-institution fee of
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`$14,000 (for up to 15 claims). See 37 C.F.R. § 42.15(a). This Petition meets the fee
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`requirements of 35 U.S.C. § 312(a)(1).
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`E. Notice of Service Information
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`
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`Please direct all correspondence regarding this proceeding to lead counsel at
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`the address shown above. Petitioner consents to electronic service by email at
`
`thoover@mccarter.com, ktoms@mccarter.com, abowels@mccarter.com,
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`apetrarca@mccarter.com.
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`F. Grounds for Standing
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`
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`Petitioner certifies that the patent for which review is sought is available for
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`inter partes review and that Petitioner is not barred or estopped from requesting an
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`inter partes review challenging the patent claims on the grounds identified in this
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`petition.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`
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`The petitioner Agiltron respectfully requests that the Board institute inter
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`partes review of Claims that Claims 1, 4, 10, and 14 of the ‘512 patent and further
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`find it invalid as anticipated or obvious, for at least the following reasons:
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`1.
`
`Claims 4 and 14 are invalid under 35 U.S.C. § 102 as anticipated by
`
`Beatty, U.S. Pat. No. 5,080,838 (“Beatty”).
`
`2.
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`Claims 1, 4, 10, and 14 are invalid under 35 U.S.C. § 103 as obvious
`
`over Beatty in view of Jang et al., U.S. Pat. No. 5,741,740 (“Jang”).
`
`3.
`
`Claims 1, 4, 10, and 14 are invalid under 35 U.S.C. § 103 as obvious
`
`over Beatty in view of Tsai et al., U.S. Pat. No. 6,070,851 (“Tsai”).
`
`4.
`
`Claims 4 and 14 are invalid under 35 U.S.C. § 102 as anticipated by
`
`Klaassen et al, “Silicon Fusion Bonding and Deep Reactive Ion Etching; a New
`
`Technology for Microstructures,” Transducers ’95 (June 25, 1995) (“Klaassen”).
`
`5.
`
`Claims 1, 4, 10, and 14 are invalid under 35 U.S.C. § 103 as obvious
`
`over Klaassen in view of Bajor et al, U.S. Pat. No. 4,771,016 (“Bajor”).
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`6.
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`Claims 1, 4, 10, and 14 are invalid under 35 U.S.C. § 103 as obvious
`
`over Klaassen in view of Jang.
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`7.
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`Claims 1, 4, 10, and 14 are invalid under 35 U.S.C. § 103 as obvious
`
`over Klaassen in view of Tsai.
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`8.
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`Claims 4 and 14 are invalid under 35 U.S.C. § 103 as obvious over
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`Wiszniewski, U.S. Pat. No. 5,682,053 (“Wiszniewski”) in view of Lisec et al,
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`Thermally Driven Microvalve with Buckling Behavior for Pneumatic Applications
`
`(“Lisec”).
`
`Of the patents and printed publications referenced above, the following chart
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`lists each reference’s basis as prior art:
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`Prior Art Pursuant to 35 U.S.C. 102(b)
`
`Exhibit
`
`Reference
`
`Effective Date
`
`Issued September 24, 1991
`
`Published June 1995
`
`Issued April 21, 1998
`
`Issued October 28, 1997
`
`Published 1994
`
`Issued September 13, 1988
`
`Beatty
`
`Klaassen
`
`Jang
`
`Wiszniewski
`
`Lisec
`
`Bajor
`
`1005
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`1006
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`1008
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`1009
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`1010
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`1014
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`1007
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`Prior Art Pursuant to 35 U.S.C. 102(e)
`
`Tsai
`
`Filed June 8, 1998
`
`
`
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`None of the patents or publications that form grounds for invalidity were
`
`before the examiner during the ex parte examination. Further, the ‘512 patent was
`
`issued before the decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)
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`and thus the examination of this patent did not benefit from the Supreme Court’s
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`guidance.
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`IV. THE ‘512 PATENT
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`The invention of the ‘512 patent is directed to a microelectromechanical
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`structure (“MEMS”) that employ thermally actuated buckling beams and thermal
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`isolation structures.
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`
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`The ‘512 patent comprises a beam 110 connected to a substrate 100 via one or
`
`more supports 102a, 102b. ‘512 Pat., 7:30–36. When the beam is heated, it
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`expands and bends to provide actuation. Id., 4:66–5:7. To increase efficiency, the
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`‘512 patent uses a thermal isolation structure to reduce heat conduction to
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`substrate. Id., 5:28–33. For challenged claims 4 and 14, that thermal isolation
`
`structure is a solid insulator in the substrate adjacent to the support. Challenged
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`claims 1 and 10 further specify that the thermal isolation structure is an oxide filled
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`trench like trenches 500a, 500b. See ‘512 Pat., 7:47–58.
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`Claim 14, which is the broadest of the claims, recites:
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`A microelectromechanical structure comprising:
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`a microelectronic substrate;
`
`a support on the microelectronic substrate;
`
`a beam that extends from the support and that expands upon
`
`application of heat thereto to thereby cause displacement of at
`
`least part of the beam, the application of heat to the beam
`
`creating a thermal conduction path from the beam, through the
`
`support and into the substrate; and
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`a thermal isolation structure in the thermal conduction path that
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`reduces thermal conduction from the beam, through the support
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`and into the substrate;
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`wherein the thermal isolation structure comprises a solid thermally
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`insulating structure in the substrate adjacent the support, to
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`thereby thermally isolate the beam and the support from at least a
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`portion of the substrate.
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`The language of Claim 1 is identical to claim 14 except that it adds a the following
`
`limitation specifying “wherein the thermally insulating structure comprises an
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`oxide filled trench in the substrate beneath each spaced apart support.” Claim 4 is
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`also substantively the same as claim 14, except that it requires “spaced apart
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`supports” rather than “a support,” and includes other minor variations that are met
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`by references with spaced apart supports. Claim 10 combines the spaced apart
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`supports from Claim 4 and the oxide filled trench of Claim 1. For the convenience
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`of the Board, Petitioner has provided a Claim Listing as Appendix A identifying
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`the minor variations between the challenge claims
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`During prosecution of the ’512 patent, claim 4 and claim 42 (which would
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`eventually issued as claim 14) were rejected as obvious over Wood in view of Sato,
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`JP2000-227374. See Ex. 1002, 85–87. In response, the applicant amended these
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`claims specifying that the thermal isolation structure is a “solid” thermally
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`insulating structure, for example the solid regions 500a and 500b. Id., 106–07.
`
`Applicant further asserted that “the combination of Wood et al., Busta et al. and
`
`Sato would not suggest a solid thermally insulating structure in the substrate,
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`adjacent the support(s) to thermally isolate the beam and the support(s) from at
`
`least a portion of the substrate.” Id. Thereafter, a Notice of Allowance was issued.
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`Id., 102.
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`V.
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`STATE OF SKILL IN THE ART
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`A. The Person of Ordinary Skill in the Art
`
`The person of ordinary skill in the art for the ‘512 patent has a masters
`
`degree in physics, electrical engineering, or mechanical engineering with at least 5
`
`years of academic and/or industry experience in the design and manufacture of
`
`MEMS devices. See Ex. 1003, Declaration of Mark Boysel (“Boysel Decl.”) ¶ 20.
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`He or she would have familiarity with a number of topics, including the physics
`
`underlying MEMS devices
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`(mechanics,
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`thermal physics, electricity and
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`magnetism) and the properties of materials commonly used in the fabrication of
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`MEMS, including the thermal conductivities and specific heats of materials and the
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`physical phenomena of thermal expansion, thermal circuits (thermal conduction
`
`paths) and mechanical stress and strain relationships. Id. He or she would also
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`have an understanding of the fabrication processes and techniques used to make
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`MEMS devices, including semiconductor wafer processing. Id.
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`B.
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`Background Knowledge of the Ordinarily Skilled Artisan
`
`When the ‘512 patent was filed in November 1999, the field of MEMS
`
`thermally actuated microvalves and microactuators was already well advanced.
`
`Indeed, thermal actuators were known in the art at least as early as the late 1980s.
`
`See Boysel Decl., ¶ 21. For example, Beatty, which claims priority to 1990,
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`teaches this technique and its advantages. See Ex. 1005, Beatty 4:47–59. By the
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`time the ‘512 patent was filed, the engineering principles and techniques
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`underlying thermal actuators was well understood and thermal actuation was
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`common tool of the ordinarily skilled artisan. Indeed, by 1999 the art had
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`numerous references that taught various interchangable designs, configurations,
`
`and fabrication techniques for MEMS thermal actuators. See, e.g., Boysel Decl., ¶
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`21; Ex. 1005, Beatty; Ex. 1006, Klaassen; Ex. 1017, Wood; Ex. 1010, Lisec; Ex.
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`1007, Tsai.
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`Likewise, the techniques of using thermal isolation structures to insulate
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`portions of microelectronic devices was also well known before the ‘512 patent.
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`See, e.g., Boysel Decl., ¶¶ 22–27; Ex. 1006, Wood 7:40–41 (“thermal isolation
`
`techniques are well known in the microelectronic and MEMS fabrication arts.”).
`
`The thermal insulating properties of materials such as silicon dioxide (SiO2) and
`
`silicon nitride (Si3N4) were well known, and films, trenches, and other structures
`
`formed from these materials had been used for over a decade for thermal and
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`electrical isolation. See Boysel Decl., ¶ 23; ‘512 Pat., 8:4–8 (recognizing silicon
`
`dioxide and silicon nitride as thermal isolation structures). Silicon dioxide has a
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`thermal resistivity of .014 W/m-K, and silicon nitride has a thermal resistivity of
`
`.19 W/m-K, both of which are far higher than resistivity of silicon (1.57 W/m-K)
`
`and other common MEMS materials. See, Boysel Decl., ¶ 23.
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`Not only was it known that these oxides and nitrides can be used to form
`
`thermal isolation structures, the amount of thermal reduction provided was
`
`predictably calculated by those of ordinary skill. See id., ¶ 24–27. Thermal
`
`management is a constant design consideration in MEMS and especially thermal
`
`actuators, given that heat itself provides the actuation means. Id., ¶ 28. As such,
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`when designing a MEMS device, one of skill in the art regularly designed thermal
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`isolation structures that predictably achieve the desired goal. Id., ¶ 28.
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`The incorporation of isolation structures in microelectronic substrates
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`themselves was likewise a widely used and well understood technique in the prior
`
`art. Indeed, the addition of a layer of silicon dioxide in the silicon substrate to
`
`form a SOI (“silicon-on-insulator”) substrate was a commonly used technique. See
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`Boysel Decl., ¶ 29–30. Likewise, techniques for forming oxide filled isolation
`
`trenches were also well understood and widely employed. See Boysel Decl., ¶ 32.
`
`Indeed, the ‘512 patent itself admits that “silicon dioxide filled trenches may be
`
`fabricated using conventional MEMS fabrication processes.” ‘512 Pat., 7:56–59
`
`(emphasis added); Boysel Decl., ¶ 32 (noting conventional fabrication techniques
`
`at the time of the ‘512 patent).
`
`C. Motivation to Combine Thermal Actuators with Thermal
`Isolation Structures
`
`While note required under KSR, it is notable the art of thermal actuators at
`
`the time of the ‘512 patent taught, suggested, and motivated the combination of
`
`thermal actuation with thermal isolation structures. Indeed, any time that heat is
`
`used as activation force, thermal management is going to be significant design
`
`consideration. See Boysel Decl., ¶ 28. And, as the ‘512 patent admits, market
`
`forces pushing for increased efficiency were driving the development of thermally
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`actuated MEMS devices. See ‘512 Pat., 1:45–50.
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`For example, the Wood patent shows that it was understood that for some
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`applications the “beams generally should be thermally isolated from the substrate”
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`and that “thermal isolation techniques are well known in the microelectronic and
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`MEMS fabrication arts.” Ex. 1017, Wood 7:33–41. Likewise, Tsai teaches that
`
`the inclusion of thermal isolation structures (including oxide filled trenches) in
`
`thermal actuators has a number of benefits, including reducing driving voltage and
`
`increasing actuation distance and precision. See Boysel Decl., ¶ 61; Ex. 1007, Tsai
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`1:57–210, 2:51–60.
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`VI. CONSTRUCTION OF THE CLAIMS
`
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification of the patent in which it appears.” See 37 C.F.R.
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`§ 42.100(b). Accordingly, the proposed constructions represent the broadest
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`reasonable interpretation (“BRI”) that one of ordinary skill would assign, and not
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`necessarily the construction that would be appropriate in litigation.
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`A. Construction of “Thermal Isolation Structure”
`
`The broadest reasonable interpretation of the claim term “thermal isolation
`
`structure” is “any structure that reduces thermal conduction compared to the
`
`absence of the said structure.” See ‘512 Pat., 2:6–10 (“A thermal isolation
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`structure in the heat conduction path reduces thermal conduction from the beam
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`through the at least one support and into the substrate, compared to the absence of
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`the thermal isolation structure.”). The ‘512 patent specifies that this claim term
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`includes, but is not limited to, structures made of silicon dioxide (SiO2), silicon
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`nitride (Si3N4), and organic dielectrics. See id., 8:4–8.
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`Notably, under BRI, the term “thermal isolation structure in the substrate” is
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`not limited to the trench configuration depicted in FIGs 5A and 5B, as shown by
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`claim differentiation between Claims 1 and 14 and the non-limiting description in
`
`the specification. ‘512 Pat., 7:47–52.
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`B. Construction of “Support”
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`
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`Under BRI, the claim term “support” should be construed as “a structure
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`separate from the substrate that holds the beam spaced apart from the substrate.”
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`The requirement that the support be separate from the substrate is implied by the
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`claim requirement that the support to be on the substrate as opposed to in the
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`substrate. ‘512 Pat., 11:50–62 (differentiating between structure “on” vs “in”
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`substrate). Further since the purpose of the support is to hold the beam to allow it
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`to displace relative to the substrate, it is necessary that the support hold the beam
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`spaced apart from the substrate to allow for movement.
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`VII. STATEMENT OF PRECISE RELIEF REQUESTED AND CLAIM-
`BY-CLAIM EXPLANATION OF GROUNDS OF INVALIDITY
`
`The Petitioner respectfully requests that claims 1, 4, 10, and 14 of the ’512
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`Patent be canceled based on the eight grounds detailed below. Petitioner presents
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`two anticipatory references, Beatty and Klaassen, both of which are thermal
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`actuators that teach all limitations of Claims 4 and 14. The Beatty and Klaassen
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`references are not redundant as Beatty presents a surface micromachined MEMS
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`actuator, like the preferred embodiment of the ‘512 patent, whereas Klaassen
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`presents a bulk micromachined MEMS actuator on an SOI substrate that is similar
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`to the accused products in the parties’ concurrent litigation. Beatty and Klaassen
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`form obvious combinations with Tsai and Jang, both of which teach the oxide
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`filled trenches required by Claims 1 and 10. Finally, petitioner presents a
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`combination of Wiszneiwski and Lisec to form a thermally actuated microvalve
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`with a thermal isolation structure implanted into the substrate.
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`While Petitioner respectfully believes that all grounds are materials and non-
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`redundant, it specifically requests that the Board not consider the Tsai and Jang
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`references redundant. Tsai is particularly relevant because it teaches the
`
`advantages of including thermal isolation trenches in the substrate of thermal
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`actuator and thereby provides a significant motivation to combine. Tsai, however,
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`is 102(e) prior art and thus the Board should grant review on Jang as well in the
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`event Patent Owner establishes prior invention relative to Tsai.
`
`A. Ground 1: Claims 4 and 14 Are Anticipated by Beatty
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`Claim 14 is unpatentable under 35 U.S.C. 102(b) (pre-AIA) for being
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`anticipated by Beatty, which issued September 24, 1991. Ex. 1005. Because
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`Beatty was published more than one year before the Nov. 8, 1999 priority date of
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`the ’512 patent, Beatty is prior art under 35 U.S.C. 102(b) (pre-AIA).
`
`Beatty, which was not before the examiner during ex-parte examination,
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`discloses a MEMS microvalve that includes all limitations of Claims 4 and 14. In
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`particular, Beatty discloses a microvalve 110 that includes a microelectronic
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`substrate (substrate 112), spaced apart supports (bonding material 132), and beam
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`between the spaced apart supports (beam 120) that expands and displaces on the
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`application of heat. See e.g., Ex. 1005, Beatty 6:36–44, 7:15–34.
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`Id., FIGs. 5, 7 (annotation added).
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`
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`Beatty also discloses a solid, thermal isolation structure in the substrate,
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`specifically the silicon dioxide 210 and silicon nitride 220 layers in substrate 112.
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`Id., 7:42–48. Notably, both silicon dioxide and silicon nitride are expressly
`
`identified in the ‘512 patent as being a solid, thermally isolating materials. See
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`‘512 Pat., 6:7–15, 8:6–8 (noting thermal isolation trench may be filled with silicon
`
`dioxide or silicon nitride). A person of ordinary skill would readily appreciate the
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`well known and calculable thermal insulating properties of oxide 210 and nitride
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`220. See Boysel Decl., ¶¶ 23–27, 46.
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`As shown by a comparison of Beatty Figures 7 and 20, the thermally
`
`isolating oxide 210 and nitride 220 layers are in substrate 112 adjacent to the
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`support:
`
`See Ex. 1005, Beatty Fig. 7, 20 (annotations added); Boysel Decl., ¶ 45. Beatty
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`specifically notes that Fig. 20 depicts the fabrication of the design illustrated in
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`Fig. 7, and thus teaches that substrate 112 incorporates within it the silicon dioxide
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`210 and silicon nitride 220 layers. Id., 7:35–37 (identifying Figs. 9–20 as a
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`method of fabricating “a one wafer embodiment of the type illustrated in Figs. 4–
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`7”); Ex. 1003, Boysel Decl., ¶ 45 (“one of ordinary skill would view [the oxide and
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`nitride] layers as being in the substrate adjacent to the supports”). Fig. 20 also
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`depicts the thermally isolating dioxide 210 and nitride 220 structures as adjacent to
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`the supports, specifically, the titanium later 230, which corresponds to bonding
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`material 132 in Fig. 7. See Ex. 1005, Beatty 6:40–44, 7:45–48, 8:16–21.
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`The dioxide 210 and nitride 220 layers thermally isolate the beam 130, 240
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`and the support (bonding material 132/titanium layer 230) from at least a portion of
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`the substrate 112. See Boysel Decl., ¶¶ 46–51. Beatty discloses multiple methods
`
`of heating of the beam 130 (which is formed from a nickel layer 230), including by
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`passing current through both the beam 120 and the titanium bonding material 132.
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`See Ex. 1005, Beatty 8:28–45. The oxide 210 and nitride 220 layers separate the
`
`beam 130 and the bonding material support 132 from the rest of the substrate 112
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`and reduces thermal conduction as opposed to the absence of those structures. See
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`Id., FIGS. 7, 20; Boysel Decl., ¶ 46–47. A simulation of Beatty shows that beam
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`temperatures are increased by over 420°K with this thermal isolation structure
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`compared to its absence. Boysel Decl., ¶¶ 48–50 (Finite Element Analysis for 100
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`mW input yielded max beam temperature of 899°K with versus 476°K without
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`thermal isolation structure).
`
`As explained above, Beatty discloses a solid thermally insulating structure in
`
`a substrate adjacent a support to thermally isolate a beam and the support from at
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`least a portion of the substrate, which the ‘512 Applicant identified as the
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`limitation missing from the prior art references in the response filed prior to
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`allowance. The portions of Beatty disclosing these limitations and all the other
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`limitations of claim 14 are described in the following table.
`
`Claim Language
`14. A
`microelectromechanical
`structure comprising:
`
`
`a microelectronic
`substrate;
`
`
`Claim Chart I
`Anticipation by Beatty
`Relevant Disclosure in Beatty
`Beatty discloses a microelectromechanical structure in
`the form of a thermally actuated microvalve 110. See
`e.g., Ex. 1005, Beatty 1:6–10 (“The present invention
`relates . . . to a micro control valve which utilizes
`mechanical beam bucking to open and close a valve
`orifice.”); Boysel Decl., ¶ 41–43.
`
`Beatty discloses the microvalve 110 including a
`microelectronic substrate 112.
`
`See e.g., Ex. 1005, Beatty 6:36–40 (“The microvalve
`110 includes a single substrate 112 . . .”); 6:49–53 (“In
`one exemplary embodiment, the substrate 112 . . . may
`be constructed from silicon.”).
`
`a support on the
`microelectronic
`substrate;
`
`[Claim 4: spaced apart
`supports . . .]
`
`Beatty discloses spaced apart supports in the form of
`bonding material 132 on the substrate 112, which
`corresponds to the titanium layer 230 in the detailed
`depiction of the fabrication. The bonding material
`132/titanium layer 230 holds the beam apart from the
`substrate.
`
`See e.g., Ex. 1005, Beatty 6:40–44 (“A beam 120 . . . is
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`Claim Chart I
`Anticipation by Beatty
`Relevant Disclosure in Beatty
`attached to the top surface of substrate 112 by bonding
`material 132 . . .. The thickness of the bonding material
`132 is such that a small gap 134 is provided between the
`bottom surface 124 of the beam and the top surface 114
`of the substrate along the intermediate portion 130 of
`the beam when the beam is in an unstressed state . . . .”
`(emphasis added)); 8:19–21 (“. . . a span of nickel layer
`240 [i.e., the beam] which is bonded at either end to the
`titanium layer 230”); Boysel Decl., ¶ 42.
`
`Beam 120 extends from and between the spaced apart
`supports of the bonding material 132. See e.g., Ex.
`1005, Beatty 6:40–44 (“A beam 120 . . . is attached to
`the top surface of substrate 112 by bonding material 132
`provided at the end portions 126, 128 of the beam.” ).
`
`Beatty discloses that beam 120 expands when heated,
`causing the beam to bend and displace. See e.g., Ex.
`1005, Beatty 7:15–29 (“When electric current is passed
`through the beam, the resistance of the beam causes the
`its temperature to become elevated, thereby causing the
`beam to buckle upwardly to the position illustrated in
`FIG. 7 . . .”) .
`
`Claim Language
`
`a beam that extends
`from the support and
`that expands upon
`application of heat
`thereto to thereby cause
`displacement of at least
`part of the beam, the
`application of heat to
`the beam creating a
`thermal conduction path
`from the beam, through
`the support and into the
`substrate; and
`
`[Claim 4, 10: a beam
`that extends between
`spaced apart supports . .
`. displacement of the
`beam between the
`spaced apart supports . .
`.]
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`Claim Language
`
`Claim Chart I
`Anticipation by Beatty
`Relevant Disclosure in Beatty
`
`
`
`Id., FIGs. 5–7 (annotation added).
`
`When heat is applied to the beam, a thermal conduction
`path from the beam through the support to the substrate
`is created. See e.g., Boysel Decl., ¶ 42; Ex. 1005,
`Beatty, FIG. 7 (showing contact between the beam 130
`and the bonding material 132, and between the bonding
`material 132 and the substrate 112 that form the thermal
`path when the beam is being heated); see also id., 8:22–
`45 (discussing electrically heating the nickel beam and
`alternative beam heating embodiments).
`
`Substrate 112 in